Keeping competitors at bay: the power of a pending patent
First published in Western Sydney Business Access.
While being innovative in business is the way forward, being copied by competitors is damaging and costly. If you patent your product or invention, you have a powerful tool for developing your business or securing investment, but you do need to be vigilant.
If a competitor copies your invention (with slight variations to avoid infringement) how can you stay on top? Enter the pending patent application.
Among various patent strategies employed by some of the top innovators, is maintaining a pending patent application. This approach can help to close potential loopholes your competitors may attempt to exploit in order to avoid your hard-earned patent.
A pending patent application can be used to secure further patents that capture the competitor's work-around.
A powerful illustration of the success of this strategy involves the recent case of Australian Mud, a company that provides drilling technology to mining and drilling industries.
Australian Mud was awarded an innovation patent and maintained a pending patent application for a core drilling device. A competitor developed a competing work-around system that included a component difference, but did not alter the key function of the invention.
While the Federal Court initially concluded that the competitor's work-around avoided the innovation patent, having a pending patent application allowed Australian Mud to have a second bite at the cherry by filing two further innovation patents, which retained the filing date of their pending patent application.
The Federal Court subsequently concluded that Australian Mud’s further innovation patents were infringed by the competitor's.
There are various ways a patent can be put to work, to both protect and grow your business. Retaining a pending patent application allows an innovator the flexibility to lodge modified patents in the future that are tailored to catch a competitor’s activities. Make sure you explore options such as this with an experienced patent attorney to ensure that you get maximum value from your IP assets.
Patent examination integration for Australia and New Zealand on the horizon
On July 5, 2011 the Australian Government and the New Zealand Government jointly announced an implementation plan to streamline patent prosecution in Australia and New Zealand. The implementation plan, which is part of the Single Economic Market (SEM) established to streamline the Australian and New Zealand economic markets, aims to deliver a single application process covering both countries by early 2013, progressing to a single examination process by June 2014.
Currently, a work sharing model is being developed which will be the first stage of the implementation plan. This will not be implemented until new patent legislation in New
Patent examination process for Australia and New Zealand to be unified
Following their meeting in New Zealand the Prime Minister of Australia Julia Gillard and the Prime Minister of New Zealand John Key announced on 16 February 2011 that a single patent examination process will be initiated for Australian and New Zealand patent applications. This announcement falls within the framework of the Single Economic Market (SEM) Agreement between Australia and New Zealand.
The new, unified process
Under the process patent applications for the same invention will be examined by a single examiner from either Australia or New Zealand and the single examination process will take account of separate national laws to give rise
IP Australia fee changes: patent continuation fees now due 4 years from filing
IP Australia announced on 10 May 2012 that changes to official fees for Australian patents, trade marks, designs and plant breeders rights will become effective in most cases from 1 July 2012, although new application filing fees will not change until 1 October 2012. Details of the new fee structures can be found at:
IP Australia > Patents > Fees
IP Australia > Trade Marks > Fees
IP Australia > Designs > Fees
IP Australia > Plant breeders rights > Fees
A significant change included within the new patent fee schedule is that the first continuation fee payment in respect of patent applications with a
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This initiative is intended to contribute to reducing the time to market for green technologies. Expedited examination of Australian patent applications is already available where rapid examination is in the public interest or where special circumstances make rapid examination desirable. A request for expedited examination must be in writing and must include reasons why the particular patent application should examined ahead of its turn.
Reasons currently accepted by
Australian Patent Office implements examination changes for divisional applications
IP Australia (the “Office”) has now begun implementing recently announced changes to patent examination practice relating to divisional applications. at least five patent applications have been refused by the Office for failure to comply with the new practice. It is now clear that the Office intends to swiftly refuse divisional applications where:
they present claim(s) identical or similar to those of a parent application that is the subject of an unresolved examination issue, and
the unresolved examination issue is not addressed within the shortened response period set by a first examination report.
Further detail on how this practice change is now being implemented